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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA547440Filing date: 07/09/2013
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Petition for Cancellation
Notice is hereby given that the following party requests to cancel indicated registration.
Petitioner Information
Name Stevland Morris
Entity Individual Citizenship UNITED STATES
Address c/o Fulwider Patton LLP 6060 Center Drive, Tenth FloorLos Angeles, CA 90045UNITED STATES
Attorneyinformation
Stephen J. Strauss, Esq.Fulwider Patton LLP6060 Center Drive Tenth FloorLos Angeles, CA 90045UNITED STATESdocketla@fulpat.com, aharvey@fulpat.com, sstrauss@fulpat.comPhone:310-824-5555
Registration Subject to Cancellation
Registration No 3518083 Registration date 10/14/2008
Registrant WONDER CREATIONS LLC338 WEST 11TH STREET #5CNEW YORK, NY 10014UNITED STATES
Goods/Services Subject to Cancellation
Class 041. First Use: 2008/07/07 First Use In Commerce: 2008/07/07All goods and services in the class are cancelled, namely: Television programming; television andmotion picture film production
Grounds for Cancellation
False suggestion of a connection Trademark Act section 2(a)
Abandonment Trademark Act section 14
Dilution Trademark Act section 43(c)
Marks Cited by Petitioner as Basis for Cancellation
U.S. RegistrationNo.
2600739 Application Date 04/23/2001
Registration Date 07/30/2002 Foreign PriorityDate
NONE
Word Mark STEVIE WONDER
Design Mark
Description ofMark
NONE
Goods/Services Class 041. First use: First Use: 1962/00/00 First Use In Commerce: 1962/00/00ENTERTAINMENT SERVICES IN THE NATURE OF LIVE MUSICALPERFORMANCES; ENTERTAINMENT SERVICES, NAMELY, PROVIDINGTELEVISION AND RADIO PROGRAMS IN THE FIELD OF MUSIC ANDENTERTAINMENT VIA A GLOBAL COMPUTER NETWORK; CULTURALACTIVITIES, NAMELY, LIVE ARTISTIC AND VISUAL ARTSPERFORMANCES; [AUDIO AND VIDEOTAPE RECORDING PRODUCTION;MOTION PICTURE FILM PRODUCTION; PRODUCTION AND DISTRIBUTIONOF ENTERTAINMENT AND MUSIC PROGRAMS FOR RADIO, TELEVISION,CABLE, SATELLITE, PAY-PER-VIEW, INTERACTIVE MEDIA, HOME VIDEOMARKETS; MULTIMEDIA PRODUCTION SERVICES IN THE FIELD OFMUSIC AND ENTERTAINMENT; RECORDING STUDIOS; MOTION PICTURESONG PRODUCTION;] AND FAN CLUBS
U.S. RegistrationNo.
3495230 Application Date 12/05/2007
Registration Date 09/02/2008 Foreign PriorityDate
NONE
Word Mark NONE
Design Mark
Description ofMark
The mark consists of the wording STEVIE WONDER in Braille code and thecorresponding raised dots.
Goods/Services Class 041. First use: First Use: 2007/08/00 First Use In Commerce: 2007/08/00ENTERTAINMENT SERVICES IN THE NATURE OF LIVE MUSICALPERFORMANCES; AND ENTERTAINMENT, NAMELY, LIVE MUSICCONCERTS
U.S. RegistrationNo.
3512466 Application Date 04/24/2008
Registration Date 10/07/2008 Foreign PriorityDate
NONE
Word Mark A WONDER SUMMER'S NIGHT
Design Mark
Description ofMark
NONE
Goods/Services Class 041. First use: First Use: 2007/08/23 First Use In Commerce: 2007/08/23ENTERTAINMENT SERVICES IN THE NATURE OF LIVE MUSICALPERFORMANCES; AND ENTERTAINMENT, NAMELY, LIVE MUSICCONCERTS
U.S. RegistrationNo.
3730690 Application Date 12/08/2008
Registration Date 12/29/2009 Foreign PriorityDate
NONE
Word Mark A WONDER WINTER'S NIGHT
Design Mark
Description ofMark
NONE
Goods/Services Class 041. First use: First Use: 2007/12/00 First Use In Commerce: 2007/12/00ENTERTAINMENT SERVICES IN THE NATURE OF LIVE MUSICAL AND
COMEDY PERFORMANCES; AND ENTERTAINMENT, NAMELY, LIVE MUSICAND COMEDY CONCERTS
U.S. RegistrationNo.
3736076 Application Date 01/16/2009
Registration Date 01/12/2010 Foreign PriorityDate
NONE
Word Mark WONDER VISION
Design Mark
Description ofMark
NONE
Goods/Services Class 041. First use: First Use: 2009/01/08 First Use In Commerce: 2009/01/08PROVIDING RECOGNITION AND INCENTIVES BY WAY OF AWARDS TODEMONSTRATE EXCELLENCE BY INDIVIDUALS AND COMPANIES THATDESIGN AND MANUFACTURE PRODUCTS AND TECHNOLOGY FOR BLINDAND VISUALLY-IMPAIRED PEOPLE
Attachments wonder productions cancellation.pdf(1301679 bytes )
Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their addressrecord by First Class Mail on this date.
Signature /Stephen J. Strauss/
Name Stephen J. Strauss, Esq.
Date 07/09/2013
684222.1
STEVL 91179 1
In the Matter of: Registration No. 3,518,083
Date of Issue: October 14, 2008
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
STEVLAND MORRIS,
Petitioner,
v.
WONDER CREATIONS LLC,
Registrant.
Cancellation No.:
PETITION FOR CANCELLATION
Stevland Morris, a United States citizen, having a place of business c/o Fulwider Patton
LLP, 6060 Center Drive, Tenth Floor, Los Angeles, California 90045, believes that he will be
damaged by Registration No. 3,518,083 and hereby petitions to cancel same.
As grounds for this petition, it is alleged upon information and belief that:
1. The Registrant has obtained United States Trademark Registration No. 3,518,083
for the mark [WONDER PRODUCTIONS and Design] for "television programming;
television and motion picture film production" in International Class 41, issued on October 14,
2008.
2. Petitioner is the internationally famous entertainer and musical artist who
performs under the distinctive stage name and mark STEVIE WONDER. Spanning a
remarkable career of forty years, the winner of more than twenty-five Grammy Awards
(including Lifetime Achievement in 1996, Best Male Pop Vocal Performance in 2006 and Best
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STEVL 91179 2
Pop Collaboration with Vocals in 2007), the 1985 Academy Award for Best Original Song,
inducted into both the Rock and Roll Hall of Fame (1989) and the Songwriter's Hall of Fame
(1983), and the recipient of the Kennedy Center Honors (1999), Petitioner is one of the most
influential and famous musicians and composers of the 20th and 21st Centuries.
3. Petitioner has used STEVIE WONDER (and WONDER) as a trademark and
service mark in connection with various goods and services including but not limited to video
and sound recordings, clothing and headwear and entertainment services. As a result of the
substantial use, advertisement and promotion of the STEVIE WONDER mark in connection with
these goods and services, as well as the international media attention and resulting renown,
Petitioner has gained very valuable goodwill and strong public recognition worldwide in his
famous STEVIE WONDER mark.
4. In addition to his far-reaching common law rights, Petitioner is the owner of the
following United States Trademark and Service Mark registrations: No. 2,600,739 covering
STEVIE WONDER for "entertainment services in the nature of live musical performances;
entertainment services, namely, providing television and radio programs in the field of music and
entertainment via a global computer network; cultural activities, namely, live artistic and visual
arts performances; and fan clubs" in International Class 41, issued on July 30, 2002;
No. 3,495,230 covering [STEVIE WONDER in Braille code and
corresponding raised dots] for "entertainment services in the nature of live musical
performances; and entertainment, namely, live music concerts" in Class 41, issued on
September 2, 2008; No. 3,512,466 covering A WONDER SUMMER'S NIGHT for
"entertainment services in the nature of live musical performances; and entertainment, namely,
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live music concerts" in International Class 41, issued on October 7, 2008; No. 3,730,690
covering A WONDER WINTER'S NIGHT for "entertainment services in the nature of live
musical and comedy performances; and entertainment, namely, live music and comedy concerts"
in International Class 41, issued on December 29, 2009; and No. 3,736,076 covering WONDER
VISION for "providing recognition and incentives by way of awards to demonstrate excellence
by individuals and companies that design and manufacture products and technology for blind and
visually-impaired people" in International Class 41, issued on January 12, 2010. Copies of these
registrations are attached hereto as Exhibit A.
5. The above-identified registrations are valid and subsisting, and Registration
No. 2,600,739 is incontestable. As the owner of these registered marks, Petitioner has the rights
to their exclusive use.
6. The STEVIE WONDER mark is so widely recognized, both nationally and
internationally, that it has become a famous and world-renown mark. The public and
entertainment industry universally associates the STEVIE WONDER mark with the
entertainment related goods and services offered and sold by Petitioner. The STEVIE
WONDER mark is unquestionably linked in the public mind with Petitioner's unique
entertainment related goods and services.
7. The STEVIE WONDER mark was famous at least as of, and long before,
February 1, 2004, the filing date of, and July 7, 2008, the alleged date of first use in commerce
of, the WONDER PRODUCTIONS and Design mark.
8. Petitioner filed two applications with the United States Patent and Trademark
Office on October 7 and 8, 2012 (Application Serial Nos. 85/747,759 and 85/747,761) for the
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STEVL 91179 4
mark covering, respectively, "motion picture films featuring comedy, drama,
action, adventure and animation; pre-recorded compact discs featuring music; pre-recorded video
discs featuring comedy, drama, action, adventure and animation; downloadable musical sound
recordings and downloadable video recordings featuring comedy, drama, action, adventure and
animation; computer game software, computer game discs; downloadable computer game
programs; downloadable computer game software via a global computer network and wireless
devices; downloadable electronic game programs; downloadable computer games via the internet
and wireless devices" in International Class 9 and "music production services; audio recording
and production; motion picture song production; production services for digital content, namely,
static and motion pictures, sound, data, video, and films; entertainment and education in the form
of video or other media content provided to a website, mobile phone, computer or wireless
device in the field of music and music entertainment programs; music distribution for others;
production of sound recordings; planning arrangement of musical performances; music
composition services for others; entertainment, namely, live music concerts; entertainment
services in the nature of live musical performances; music publishing services; production of
musical recordings; entertainment services, namely, providing non-downloadable playback of
music via the internet; recording studio services, namely, recording of music; music video
production services" in International Class 41. The Patent and Trademark Office issued Office
Actions refusing to register Petitioner's mark on the ground that it is
confusingly similar to Registrant's WONDER PRODUCTIONS and Design registration.
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STEVL 91179 5
Registrant's Mark Has Been Abandoned
9. Upon information and belief, Petitioner alleges that Registrant has completely
abandoned all use of the WONDER PRODUCTIONS and Design mark and has no intention of
any kind of reviving use of the mark in its business.
10. Petitioner is damaged and will continue to be damaged because Registrant's
continued registration of the WONDER PRODUCTIONS and Design mark stands as a bar to
Petitioner's ability to federally register and protect his STEVIE WONDER,
and WONDER marks for the services identified in paragraphs 4 and 8 above.
Registrant's Mark Falsely Suggests a Connection with the STEVIE WONDER Mark
11. Petitioner has been using the STEVIE WONDER mark in connection with
various entertainment related goods and services for over 50 years and it is well-known among
consumers and the entertainment industry. Registrant's WONDER PRODUCTIONS and Design
mark falsely suggests a connection with Petitioner in violation of 15 U.S.C. §1052(a), to the
damage of the Petitioner.
Registrant's Mark Dilutes the Distinctiveness and Fame of Petitioner's STEVIE
WONDER Mark
12. Petitioner is, and will continue to be, damaged by the existence of the WONDER
PRODUCTIONS and Design registration, because said registration is so deceptively similar to
Petitioner's famous STEVIE WONDER mark as to dilute the STEVIE WONDER mark and
harm Petitioner's reputation.
13. Consequently, cancellation of Registrant's WONDER PRODUCTIONS and
Design registration should also be granted pursuant to 15 U.S.C. §1125(c) and Trademark Board
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STEVL 91179 6
Manual of Procedure §303.01 on the grounds that Petitioner is, and will continue to be, damaged
by said registration because the registration dilutes the distinctive and famous quality of
Petitioner's STEVIE WONDER mark.
WHEREFORE, Petitioner prays that Registration No. 3,518,083 be canceled and that this
Petition for Cancellation be sustained in his favor.
Dated: July 9, 2013
Respectfully submitted,
STEVLAND MORRIS
By: __________________________________
His Counsel
Stephen J. Strauss
FULWIDER PATTON LLP
6060 Center Drive, Tenth Floor
Los Angeles, CA 90045
(310) 824-5555
684222.1
STEVL 91179 7
CERTIFICATE OF SERVICE
I hereby certify that I served a copy of the foregoing PETITION FOR CANCELLATION
upon Registrant by depositing one copy thereof in the United States Mail with First Class
postage affixed thereon on July 9, 2013, addressed as follows:
Mr. Scott R. Waltmann
WONDER CREATIONS LLC
338 West 11th Street, #5C
New York, New York 10014
___________________________________
Andrea L. Harvey
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